The Supreme court has refused an appeal by Arudra Engineers Pvt. Ltd
(Plaintiff) who manufactures industrial chemical agents of name Coronil-92B
against Divya Yog Mandir Trust and Patanjali Ayurveda Ltd.to
stop using the brand name Coronil
In this article, Author majorly focuses on
findings of section 29(4)[i]of Trade Marks Act, 1999 and honesty of the
defendant in the adoption of a trademark. I reckon that this order is one of the
most lucid and elaborate orders in contemporary times from the High Court
affecting the interpretation of the Trade Marks Act, 1999 especially Section
The plaintiff is registered proprietor under class 1 of industrial chemicals of
marks Coronil-92B and Coronil-213SPL
. Defendants have recently launched a
medicine of name Coronil as a cure of coronavirus but Ministry of Ayush
restated it as immunity booster against coronavirus not cure. The plaintiff sued
defendants on relying section 29(4) of Trademark Act, 1999 specified that they
have a reputation in India and overseas. One of the crucial arguments made by
the plaintiff is due to perceived ineffectualness of defendant's product and
accompanying negative press will dilute the reputation of the plaintiff and
their product. On the other hand, only defence taken is the difference in the
product and their field of operation.
Findings of Section 29 of Trade Mark Act, 1999
Section 29 of the Trade Marks Act, 1999 protects against infringement of the
registered trademark. Section 29(1) deals with infringement of trademark when an
identical mark is used for the same class of goods. Whereas section 29 (4) deals
with infringement of trademark when an identical mark is used for a different
class of goods. Protection is granted in both cases. As per statute only
required condition is that the mark of the plaintiff should have a reputation
In the present case, the court has chosen strict adherence to the words of the
statute and didn't impute any words, not in provision. Moreover, the court
relied on various decisions including US supreme court decision of Bostock V.
[ii] in which literal interpretation was favoured.
this case, the court reiterated that Reputation in India means reputation in
India, nothing less, nothing more. Moreover, it should not be confused with well-known Mark
defined in section 2(1) (zg), no ambiguity in the statute is
evident which gives rise to multiple interpretations that subsequently requires
an inquiry into the legislative intent.
Section 29(4) allows marks of
substantial reputation to seek an injunction without subjecting themselves to
the onerous task of proving that their mark is also well-known under section
2(zg)[iii]. As stated in the case of Toyota Jidosha Kabushiki Kaisha vs M/S
Prius Auto Industries[iv], section 2(zg) be more or less obsolete.
It is pointed
out that courts are allowed to apply its mind rather than looking into the
register to claim reputation under sec. 2(zg).
Plaintiff have been in the business of industrial chemicals for over 20 years.
They have several clients including NTPC, BHEL Ltd., Reliance Industrial
Limited, etc. India does not have many heavy industries but if those few
industries throughout the expanse of the country come to know about the product
of plaintiff then it can be very well concluded that plaintiff has a reputation
The honesty of the defendant's adoption of mark
In the present case, it should be clear that coronil is a cure of coronavirus
or not because according to the defendant, name of tablet is justified as it is
Coronavirus-nil. Since the defendants were stopped from using coronil as a
cure but as an immunity booster they should market the same as an immunity
booster only rather than launching it as a cure of coronavirus and play with
panic among the public during a pandemic.
There is no just cause, no much less due cause for what defendants can be
permitted to use the word coronil. Section 29(4)(c) of Trade Mark Act, 1999
prohibits any type of unfair advantage. In this factual situation, it is made
clear that Coronil is not a cure to coronavirus and there is no nexus between coronavirus infection and proposed
In the landmark case of Carlill V. Carbolic Smoke Ball Co
though it was about the unilateral contract and its acceptance. It also
elucidates the phenomenon of profiteering by tapping on panic same can be
interpreted in this case. Prima facie, there is a possibility that ordinary
public might question that trademark Coronil of the plaintiff pertaining to its inefficacy does not
prevent corrosion by drawing a simple analogy.
The defendant should have checked the register before launching their tablet,
they cannot plead ignorance and if they had checked it already that coronil
a registered trademark and still proceeded then this audacity cannot be
considered. Patanjali being a 10000-crore company cannot bulldoze the
plaintiff's way and infringe the trademark. As a result of invited litigation,
defendants have to pay Rs. 500000 to Government Yoga and Naturopathy Medical
College and Hospital, Chennai and Rs. 500000 to Adyar Cancer Institute (WIA),
East Canal Bank Road, Chennai.
This case depicts the lack of duty of care during registration by defendants.
Defendants have stated that plaintiffs are only 10 crore company whose mark is
known only to limited people that too in their industrial fraternity and related
it with being powerful as a 10000-crore company, through this judgement court
has reiterated that Big fish cannot eat small fish. The reputation of the
plaintiff is protected and identified perfectly even against such a huge player.
Despite judgement being criticized for its inconsistency which in my opinion is
unsubstantiated as Court to be consistent in every matter is a form of utopian
argument. Utopian arguments have been crucial in the development of legal and
political theory; however, we ought not to be hoodwinked into accepting that
Utopia can be accomplished.
Apparently, the perfect is the enemy of The Good,
and unnecessary concern of the Court with utopian criticism may divert us from
valuable ones. Therefore, this judgment certainly brings an uplifting tinge of
equity into trademark law.
- Trade Marks Act, 1999, Act no. 47, Act of Parliament, 1999
(India) § 29(4)
- Bostock v. Clayton County, 590 U.S. 28, (2020)
- Trade Marks Act, 1999, Act no. 47, Act of Parliament, 1999 (India) §
- Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries, AIR 2018 SC
- Carlill V. Carbolic Smoke Ball Co,  EWCA Civ 1
Award Winning Article Is Written By: Ms.Nishtha Shrivastava
Authentication No: NV31822929580-9-1120